Patent portfolios are now regarded by many companies as an invaluable and necessary business asset. A patent portfolio is typically designed to cover a company's core technology, and often includes many patents related to the inventions surrounding the core technology. For example, if a company's core technology involves a special type of laser, the company may patent the special type of laser, as well as inventions related to the laser, such as methods for coating the laser mirrors, methods for fabricating devices using the laser, apparatus that uses the laser for particular applications (e.g., photolithography) and the like.
One reason for patenting the related inventions surrounding the core technology is to maintain freedom of action in practicing the core technology. For example, if the laser requires specially coated mirrors and another company or individual obtains related patents (e.g., on the mirror as an article of manufacture, or on the method for coating the mirror), then the value of the core laser patent is diminished because use of the laser will require licensing the laser mirror patents.
Unfortunately, the cost of applying for, prosecuting, and maintaining a single United States patent can cost many thousands of dollars. Filing corresponding patent applications and maintaining corresponding patents in other counties around the world further increases the cost. Thus, when large numbers of patents are involved, as is the case of a patent portfolio, the costs can become prohibitive, even for large companies.
One approach to reducing the cost of maximizing the value of core technologies is patenting the core inventions and publishing articles or papers disclosing inventions related to the core inventions. While disclosing related inventions donates the related inventions to the public, if done correctly, the core technology is protected and the related inventions will not be of much use to others outside the context of the core patent(s). More importantly, the related inventions will not be patentable by others since they are already in the public domain.
Inventions related to a core invention are often incorporated into a company's commercially available product line without being the subject of corresponding patent applications or defensive publications. If an invention is “on sale” in the United States more than one year prior the filing date of a competitor's patent application claiming the same invention, this fact is a statutory bar to patentability under 35 U.S.C. 102(b). However, from a practical standpoint, “on sale” issues are typically raised at the enforcement or litigation stage of a patent dispute because examiners in the United states Patent and Trademark Office have no centralized database of commercially available products as a body of searchable prior art. Many times, companies fail to keep historical documentation of their product lines and potentially valuable evidence is lost or inadvertently destroyed. In addition, companies do not have benefit of a commercially available product database for conducting patentability searches.